• Meta Platforms, Inc. v. Sitnet, LLCAll claims unpatentable
  PTAB · Sep 8, 2025 · IPR2024-00530 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious; the Board denied the contingent motion to amend proposing substitute claims 17–32.

  RulingsFinal written decision

  • Expert testimonyOther

    “iv. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Gage teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Gage. v. Independent claim 8 Independent claim 8 recites a method of “providing situation related information to a situation authority via a situational network,” wherein the method comprises “receiving, by a participant device, a roll call query soliciting a reply related to a status of a participant based on the participant being determined, by the situation authority, to be geographically proximate to the situation,” “receiving, by the participant device, a selection of a status response from the participant,” and “sending the status response to the central authority, wherein the status response is included in a roll call list.” Ex. 1001, 34:46–57. Petitioner generally refers to its contentions with respect to claim 1. Pet. 34–36. In particular, Petitioner contends that Gage teaches a subscriber device that communicates a status indicator to the disaster response system through a subscriber status reporting system that implements a “situational network” configured for use during disasters. Id. at 34 (citing Ex. 1005 ¶¶ 19, 25). Petitioner additionally contends that Gage’s “disaster response system” is a “situation authority” because the disaster response system detects an occurrence of a disaster affecting a region, receives and aggregates information related to the disaster, and then provides the information to various participants in the network. Id. (citing Ex. 1005 ¶¶ 8–9, 21, 36, 45; Ex. 1003 ¶ 104). With respect to the “situational network” limitation, Patent Owner” slip op. at 39

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “situational network” (claims 1, 8, 13) Patent Owner points out that the district court has already construed” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “viii. Ground 1 Conclusion In light of the above analysis, we determine that Petitioner’s evidence” slip op. at 46

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “c. Conclusion on Petitioner’s Patentability Challenges based on Obviousness for Proposed Substitute Claims For the above reasons, we determine that Petitioner has shown by a preponderance of evidence that the subject matter of proposed substitute claims 17–32 would have been unpatentable. IV. CONCLUSION9 For the foregoing reasons, we conclude that Petitioner has shown by a” slip op. at 82

  Patent outcomesUS 9,877,345 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 9,877,345
• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Unpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibility
  Patents in suitUS 6,996,538
• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision

  Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 6,996,538
• Westlake Services, LLC v. Credit Acceptance Corp.All claims unpatentable
  PTAB · Jan 25, 2016 · CBM2014-00176 · APJ David C Mckone · CBM · Final written decision

  Claims 10–12 and 14–33 are unpatentable under § 101 because they claim an abstract financing process using generic computer components.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “As explained in the 008-FWD, the Specification describes an advance amount as the amount of money a lender agrees to pay to the dealer. Ex. 1001, 8:45–46. “[T]he advance amount is determined by the party extending financing based on the customer’s credit score, the dealership’s past collection history, the particular vehicle being considered and other factors.” Id. at 9:21–24. Although the advance amount could be less than the sales price minus the down payment, the Specification does not require that it be so. In any case, Patent Owner has since accepted our construction of “advance amount” and has chosen not to contest it in this proceeding. Tr. 28:1–12. We maintain that construction on the full record of this proceeding. The parties do not argue in this proceeding for different constructions of “front-end profit” and “database.” We maintain these constructions on the full record of this proceeding. Additionally, in the 008-FWD, we determined that the following terms, also relevant to claims at issue in this proceeding, required no express construction: “receiving information related to a database,” “receiving information from the customer,” “calculating,” “determining,” “presenting . . . to the dealer,” “automatically recalculated,” “transmitted,” “generating,” and “selectable criteria.” 008-FWD, 10–18. In the Petition, Petitioner addressed several of these terms, contending, inter alia, that “receiving information related to a database of a dealer’s inventory,” “receiving information from the customer,” “calculating a credit score for the customer based at least in part on the information gathered from the customer,” and terms including “determining” are indefinite under 35 U.S.C. § 112, second paragraph. Pet. 32–33, 39, 41. We declined to institute on that ground, concluding that the Petition’s showing was unpersuasive. Dec. 27. The parties propose no other constructions for these terms. On the complete record of this proceeding, we maintain our decision not to construe these terms expressly. 3. Additional Terms Construed in the Decision to Institute In the Decision to Institute, we preliminarily construed “calculation unit” to mean “a computer component configured to calculate” and “financing package generating unit” to mean “a computer component that generates financing packages and contains a database and a calculation unit.” Dec. 7. In the Petition, Petitioner contends that these terms are indefinite. Pet. 36. As stated above, we declined to institute on the asserted ground of indefiniteness. Dec. 27. The parties do not dispute further these” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a lender will advance to the dealer (advance amount) for each product in the inventory (which need only include two products); calculating profits for the inventory items2 (using arithmetic based on the advance amount, dealer cost, and down payment); and presenting a financing package (with unspecified information) to the dealer for each product in the inventory. The underlying concept of claim 1, when viewed as a whole, simply is to receive information from a customer’s credit application, process that information, 1 Claim 10, at issue in this case, depends from claim 1. Thus, our analysis of claim 10 starts with claim 1. 2 Claim 1 does not recite using such profit information. Claim 12 later recites sorting the financing packages based on selectable criteria, which could be profit. dealer. Rephrased, this is the abstract idea of “processing an application for financing a purchase.” Claim 10 depends from claim 1 and adds providing generic computer structure for performing the steps of claim 1 (a “user terminal” for entering customer information; and a “server” connected to the user terminal “via a network,” for receiving information, accessing the database, performing claim 1’s arithmetic to generate financing packages, and transmitting the financing packages to the user terminal). Thus, claim 10 recites the same abstract concept as recited in claim 1, performed with generic computer components.” slip op. at 15

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “applying the steps of claim 1 (which we determined in CBM-008 to be abstract) using generic, conventional computer components, recited in purely functional language. Pet. 22–23. We agree, and conclude that the generic computer components recited in claim 10 do not transform the nature of the claim such that claim 10, as a whole, recites an inventive concept. Claim 1, from which claim 10 depends, recites a database, which stores information about a dealer’s inventory. Claim 10 adds to claim 1 a server for performing calculations, a user terminal for entering the information to be calculated, and a network for moving the information back and forth. As Petitioner argues, claim 10 provides no details as to the components are recited generically, using purely functional language. In essence, claim 10 recites applying the abstract idea of claim 1 using generic computer components. Put differently, claim 10 simply limits the method of claim 1 to a particular technological environment. This is analogous to the claims at issue in Alice, which generically recited a “data storage unit” and “computer,” for example (detailed more fully in the Federal Circuit’s opinion in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1285–90 (Fed. Cir. 2013)), and those at issue in Accenture, 728 F.3d at 1344–45, which recited a “database,” “client component,” “server component,” and “automated method,” for example. In the words of the Alice Court, claim 10 essentially “[s]tat[es] an abstract idea while adding the words ‘apply it with a computer.’” 134 S. Ct. at 2358. Nor does claim 10 purport to improve the functioning of the computer itself. See buySAFE, 765 F.3d at 1354; compare with DDR Holdings, 773 F.3d at 1258 (“In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible.”).” slip op. at 23

  Patent outcomesUS 6,950,807 unpatentable
  Claim construction§ 101 eligibilitycites Bilski
  Patents in suitUS 6,950,807
• The Jewelry Channel, Inc. USA D/B/A Liquidation Channel v. America’S Collectibles Network, Inc.All claims unpatentable
  PTAB · Oct 16, 2015 · CBM2014-00119 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–39 are unpatentable under § 101, and the motion to amend proposing claims 40–42 is denied because those claims also recite patent-ineligible subject matter.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “In the ’211 Patent, the producer tests a plurality of prices throughout the auction. Preliminary indicators, e.g., the number of customers who press “1” to place an order at a particular price, provide statistics about how customers reacted to the offers at various test prices. In the ’211 Patent, the producer adjusts the demand curve by reducing the quantity available based 2 OIP was decided on June 15, 2015, shortly after Patent Owner filed its Reply to Petitioner’s Opposition to the Motion to Amend (Paper 28, “Opp. to Mot. to Amend”), and a month before the oral hearing in this proceeding. At our request, the parties filed post-hearing briefs on October 1, 2015, to address the implications of OIP. Paper 37 (“Petitioner’s Suppl. Brief”) and Paper 39 (“PO Suppl. Brief”). on customers’ reactions to the various price offers, and selects new prices based on the estimated outcome, i.e., expectations that additional customers will purchase units as the price is lowered. The ’211 Patent claims recite that these steps occur before the actual sale of an item being auctioned.” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “gathering steps, stating “[a]t best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.” Id. Thus, considered individually or as an ordered combination, the claim elements in OIP did not transform the claimed abstract idea into a patent eligible process. Id. Similarly, in the ’211 Patent, the remaining claim elements involve a conventional system interface, e.g., providing a website or a call-in telephone number and placing callers into a queue, routine data gathering, e.g., recording the time an inquiry enters the queue and storing the preliminary quantity of units in a database, and routine calculations, e.g., subtracting from the stored preliminary quantity of available units based on the number of customers who indicate they are prepared to make a purchase.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “ideas and purported inventive subject matter in our discussion of claims 1– 39. Additional elements such as a computer and ancillary conventional apparatus such as various databases storing information accessed by the computer, a call monitoring component that places a call into a queue and assigns the call to operator, an electronic call record that records the time the call was made, and an automated message, do not impose meaningful limits on the abstract idea of reducing the available quantity and the price during the auction based on the indicators that provide the auction producer confidence the customer will complete a purchase at that price (or a more favorable price) at the close of the auction. “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” SiRF Techs., Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010) (determining that a GPS receiver was a meaningful limit on the scope of the claims because, without the recited GPS receiver, it would be impossible to generate pseudo ranges that estimate the distance from a GPS receiver to a plurality of GPS satellites). In contrast, the limitations in the proposed amended claims recite elements of a general purpose computer that facilitate conducting a reverse auction more efficiently. Even limited to the context of an MSIRA, these added features do not limit the scope of the claim in a meaningful way because the reservation of units does not require a specific machine.” slip op. at 16

  Patent outcomesUS 8,370,211 unpatentable
  § 101 eligibilitycites Alice · Bilski
  Patents in suitUS 8,370,211
• Westlake Services, LLC D/B/A Westlake Financial Services, LLC v. Credit Acceptance Corp.All claims unpatentable
  PTAB · Mar 24, 2015 · CBM2014-00008 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 1–9, 13, and 34–42 are unpatentable under § 101 because they claim an abstract financing process implemented with routine computer use.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Claim 1 recites in pertinent part “calculating a front-end profit to be realized by the dealer for each individual product in the dealer inventory based on the dealer cost associated with each individual product, the advance amount determined for each individual product, and the down payment amount” (emphases added). The actual claim language as to calculation of the “front-end profit” is repeated in the Specification. Ex. 1001, 3:63–66. “Put simply, the front-end profit, is equal to the down payment amount plus the advance amount minus the dealer’s costs.” Id. at 8:60–63. “Advance amount” is construed immediately hereafter. Thus, we construe “front-end profit” to mean “the down payment amount plus the advance amount minus the dealer cost.”” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningNo construction neededOther

    “Patent Owner’s cites to the Specification are not directly supportive of its proposed construction. PO Resp. 40–42. Patent Owner cites to the Nerenberg Declaration, as it did previously, for the proposition that automation of financing options through a computer is quicker than doing so manually. Id. at 41 (citing Ex. 2008 ¶ 53). The speed with which a computer may perform calculations is not a part of the construction of the term at issue. Further, we see no reason why the claims should be construed to require communication over a “network,” when the term is not recited in any of the challenged claims (but is recited in others, such as claim 14, for example). We determine that the term “receiving information from the customer” is plain on its face and requires no express construction.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “We conclude that claim 1 is directed to an abstract idea and, at most, merely recites implementing it with a computer. See Bilski, 130 S. Ct. at 3231. The abstract idea of processing an application for financing a purchase claimed is a known concept described in the ’807 patent. Ex. 1001, 1:33–2:50. Specifically, the ’807 patent describes processing a financing application as: a customer completing a credit application; obtaining financing from a financing institution; the customer providing a down payment and signing a promissory note to the dealer; and the financing institution paying the dealer the balance for the purchase after applying the down payment. Id. at 1:33–2:14. If the financing is not completed, the process is repeated. Id. at 2:15–50; see Tr. 34:6–35:10. Patent Owner’s arguments that the claims are directed to a specific method are relevant, if at all, to the second step of the Alice framework, not the first, and are therefore unpersuasive. We disagree that claim 1 taken “as a whole” is any more than an abstract idea relating to the general method of processing an application for financing a purchase. Claim 1 simply describes receiving information, including sale prices and dealer costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a financer will advance to the dealer (advance amount) for each product in the inventory; calculating profits for the inventory items (using basic arithmetic based on the advance amount, dealer cost, and down payment); and presenting financing packages (with unspecified information) to the dealer. Ex. 1001, 12:56–13:14. The arguments and evidence presented by Petitioner are persuasive that claim 1 is directed to no more than this abstract idea, not tied to any specific machine, of processing an application for financing a purchase. Pet. 37 (citing Ex. 1006 ¶¶ 280, 285). Patent Owner’s evidence and arguments in this case do not persuade us otherwise. For purposes of the first step of Alice, Patent Owner has not distinguished any of the other independent or dependent claims from claim 1. Thus, we determine that Petitioner has proven that claims 1–9, 13, and 34–42 are directed to an abstract idea.” slip op. at 26

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner

    “We are not persuaded that the claims include something beyond the abstract idea that transforms the claimed abstract idea into patent eligible subject matter. Merely using a computer to speed the steps of generating a financing package for each item of inventory is not such a transformation. See Bancorp Services, 687 F.3d at 1278 (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Likewise, the ability to create an “immediate offer” does nothing more than speed up that which can be done by a human. Although we agree that the claimed steps require a computer, there is insufficient evidence for us to conclude that the computer is being utilized for anything beyond routine or conventional use. We have reviewed the Nerenberg Declaration, including specifically paragraphs 130–153, and find it to be conclusory and lacking sufficient underlying facts or data. As such, we give the declaration minimal weight in our determination. See 37 C.F.R. § 42.65(a). As noted above, routine use of a computer is not enough to meet the inventive concept step of Alice. Ultramercial III, 772 F.3d at 716; see Alice, 134 S. Ct. at 2358 (“Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of additional featur[e] that provides any practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”) (citations and quotation marks omitted); Accenture, 728 F.3d at 1344–45 (claims reciting a “database,” “client component,” “server component,” and “automated method,” for example); CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1289 (Fed. Cir. 2013) (claims reciting a “data storage unit” and “computer,” for example). Even assuming some of the claimed steps were not previously known in the art is not alone enough to confer patent eligibility. Id. Moreover, the ’807 patent itself describes the steps in a financing process as they existed before the ’807 patent. Ex. 1001, 1:33–2:50. Thus, the record supports our conclusion that the steps of the method were known previously. Further, Patent Owner acknowledges the steps individually are known but argues the steps as a whole transform the claim into patentable subject matter. Tr. 31:21–32:1. This argument is not supported sufficiently by any evidence beyond attorney argument to persuade us of patent eligibility. Patent Owner argues that there are many ways of providing financing that do not require calculating either a “front-end profit” or an “advance amount.” PO Resp. 10 (citing Ex. 2008 ¶ 120). Mr. Nerenberg testifies that examples where the two terms are not required for financing are mortgages and student education loans. Ex. 2008 ¶ 120. Nevertheless, calculating an amount a lender will advance or an amount by which a dealer will profit from a transaction are routine, conventional activities for financial transactions. See, e.g., Ex. 1001, 1:34–2:10. Furthermore, our construction of the terms “front-end profit” and “advance amount” supports that they are conventional. Regardless, neither term, alone or in combination, “transform[s] the nature of the claim” into patent eligible subject matter. Mayo, 132 S. Ct. at 1294, 1297.” slip op. at 29

  Patent outcomesUS 6,950,807 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski
  Patents in suitUS 6,950,807
• Apple, Inc. / Domino’S Pizza, Inc. et al. v. Ameranth, Inc.Some claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00013 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1, 2, 4, 5, 10, and 12 are unpatentable under § 101; claims 3, 6–9, 11, and 13–16 were not shown unpatentable because the petition did not establish their claimed features were conventional.

  RulingsFinal written decision

  • BurdenMixed

    “We are persuaded by Patent Owner’s argument. Petitioner states that the claimed linking is a “classic example[] of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Reply 15. However, Petitioner fails to provide sufficient evidence to support its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient evidence to establish that a menu having the functionality to perform the claimed linking from a GUI on a hand-held device, was well-known or conventional and merely require a general purpose computer. See id. Upon review, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 3 and 11 recite patent-ineligible subject matter.” slip op. at 37

  • Skill levelOther

    “B. Claim Construction The Board interprets claims of unexpired patents using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 31), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 34–36). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). Below, we construe the limitations that are relevant to the issues of patent-eligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’733 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033, col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium® microprocessor”). Further, Petitioner’s construction is consistent with the Specification, which as discussed above, discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15

  Patent outcomesUS 6,982,733 mixed
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 6,982,733
• Agilysys, Inc. / Expedia, Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00016 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–10 are unpatentable under § 101 because they claim the abstract idea of generating a criteria-based menu and transmitting it using conventional computer elements.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patent of claims 1–15 of U.S. Patent No. 6,871,325 B1 (Ex. 1032, “the ’325 patent”). On March 26, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–10 of the ’325 patent on only one proposed ground of unpatentability, 35 U.S.C. § 101. Paper 19 (“Dec. to Inst.”). We did not institute as to claims 11–16 on any of the grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 26, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Reply”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 30), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 33–35). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). We construe, below, the limitations that are relevant to the issues of patenteligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’325 patent uses typical hardware elements in the form of a computer workstation and that “[a] typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1032, col. 5, ll. 43–45; see also id. at col. 5, ll. 54–56 (“a CPU, e.g., Pentium® microprocessor”). Further the Specification discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 6, l. 33–col. 9, l. 3), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 31–37). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 6,871,325
• Agilysys, Inc. v. Ameranth, Inc.All claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00015 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–11 are unpatentable under § 101 because they claim the abstract idea of generating and transmitting menus using only generic computer elements and conventional activity.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. The body of claim 1 recites a system that includes a central processing unit (“CPU”), a data storage device, an operating system with a GUI, a first menu, a modifier menu, a sub-modifier menu, and application software. Ex. 1031, col. 14, l. 48–col. 15, l. 11. The application software is recited as “for generating a second menu from said first menu” and the wherein clause further defines how the second menu is generated from the first menu. Id. at col. 15, ll. 1–11. The application software is recited, further, as “for . . . transmitting said second menu to a wireless handheld computing device or Web page.” Id. at col. 15, l. 1–2. As can be seen from the above, the body of claim 1 recites a structurally complete invention; one that corresponds to the embodiment that has a desktop PC and a menu configuration application described in the Specification at column 6, line 9 thru column 8, line 62 and depicted in Figure 1. See also Ex. 1031, col. 3, ll. 35–41 (describing the present invention as a software tool for building a menu, modifying a menu, and downloading it to a handheld device or Web Page). As described in the Specification, a menu is updated using the GUI of the menu configuration application and, then, the updated menu is downloaded to a connected handheld device by clicking on a “Download Database” item or icon in GUI 1. Ex. 1031, col. 8, ll. 45–62; see also id. at col. 3, ll. 35–37; col. 6, ll. 22– 25; col. 7, ll. 12. Thus, the updated menu is the same on the desktop PC and the handheld device. At the oral hearing, Patent Owner indicated that downloading is synchronizing, as “[i]t’s making something the same with something else.” See Tr. 28. For these reasons, we agree with Petitioner that the preamble is non- slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’850 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1031, col. 5, ll. 34–40; see also id. at col. 5, ll. 48–49 (“a CPU, e.g., Pentium ® microprocessor”). Further, as discussed above, the Specification discloses using a desktop PC to generate and downloads menus to a connected handheld device (see id. at col. 6, l. 22–col. 8, l. 62), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 29–33). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “We are not persuaded by Patent Owner that its proposed construction is the broadest reasonable construction in light of the Specification. We see nothing in the Specification, and Patent Owner does not point to anything in the Specification, that provides support for Patent Owner’s proposed construction, in particular that the menus have a “linked levels” feature. Although the Specification discloses some menus that are linked to additional menus, this “linked levels” feature is extraneous and should not be read from the Specification into the claim. See Ex. 1031, col. 5, ll. 23–33 (“File options can have additional subordinate or child options associated with them. If a file option having a subordinate option is selected . . .” (emphases added)). We give “menu” its ordinary and customary meaning. RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options available to a user, as displayed on a computer or TV screen.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This definition is consistent with the Specification, which describes menus as providing choices or options in a GUI. See Ex. 1031, col. 5, ll. 17–20; see Fig. 1 (depicting a menu, a modifier menu, and a sub modifier menu). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of “menu” is a list of options available to a user displayable on a computer. v. “the second menu is capable of being displayed on the display screen of a” slip op. at 13

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “The claims recite a system that generates a second menu from a first menu by selecting menu categories and items from the first menu, adding menu categories and items to the second menu, and selecting parameters from modifier and sub-modifier menus to assign to items in the second menu. The claims also recite that the system transmits the second menu to a wireless handheld computing device or Web page. As discussed in section I(A) above, the Specification discloses a user generating a menu by adding or deleting menu categories, such as salads or desserts; menu items, such as caesar salad or green salad; menu modifiers, such as dressing; and menu sub-modifiers, such as ranch or blue cheese to create the second menu. Ex. 1031, col. 6, l. 35–col. 8, l. 20. The Specification states: [w]hile the preferred embodiment of the invention includes the selection of items from a master menu wherein the master menu is displayed using a graphical user interface, it is to be appreciated that any means for displaying the master menu to the user and generating another menu in response to and comprised of the selections made is encompassed by the contemplated invention. (id. at col. 13, ll. 52–58) and [t]he inventive concept encompasses the generation of a menu in any context known to those skilled in the art where an object is to facilitate display of the menu so as to enable selection of items from that menu. . . . Likewise, displaying menus generated in accordance with the invention on PDAs and Web pages to facilitate remote ordering are but a few examples of ways in which such menu might be used in practice. Any display and transmission means known to those skilled in the art is equally usable with respect to menus generated in accordance with the claimed invention.” slip op. at 18

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 6,384,850

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.